Titan Enterprises (Qld) Pty Ltd v Cross  FCA 1241 (19 October 2016)
This was an interlocutory application involving a claim to privilege attaching to documents produced under subpoena prior to trial. Significantly, the privilege relied upon concerned s229 of the Trade Marks Act and this is the first occasion in which that provision has been construed by a Court.
The principal proceeding concerned an application by Titan seeking to shut down a website operated by the respondents entitled BEWARE OF TITAN GARAGES. However, Titan was having difficulty ascertaining whether Mr Cross was a real or fictitious person.
There was an earlier domain name dispute where Mr Cross was represented by Davies Collison Cave (DCC), a firm of Patent and Trade Marks Attorneys. Titan issued a subpoena to DCC seeking production of various documents from that matter primarily to ascertain the identity and contact details for Mr Cross. DCC initially produced documents in redacted form and contended that Titan was not entitled to inspect them in their unredacted form because the remaining contents were subject to privilege under s229 of the Trade Marks Act.
Section 229 provides as follows:
Privileges of trade marks attorney and patent attorney
(1) A communication made for the dominant purpose of a registered trade marks attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a communication made for the dominant purpose of a lawyer providing legal advice to a client.
(1A) A record or document made for the dominant purpose of a registered trade marks attorney providing intellectual property advice to a client is privileged in the same way, and to the same extent, as a record or document made for the dominant purpose of a lawyer providing legal advice to a client.
(1B) A reference in subsection (1) or (1A) to a registered trade marks attorney includes a reference to an individual authorised to do trade marks work under a law of another country or region, to the extent to which the individual is authorised to provide intellectual property advice of the kind provided.
(2) The regulations may provide that a registered trade marks attorney or a patent attorney has, in relation to documents and property of a client in a matter relating to trade marks, the same right of lien that a solicitor has in relation to the documents and property of a client.
(3) Intellectual property advice means advice in relation to:
(a) patents; or
(b) trade marks; or
(c) designs; or
(d) plant breeder’s rights; or
(e) any related matters.
(4) Nothing in this section authorises a registered trade marks attorney to prepare a document to be issued from or filed in a court or to transact business, or conduct proceedings, in a court.
Logan J noted that it is for the person asserting privilege to prove that it is applicable. Like a claim for client legal privilege or legal professional privilege, the essential issue under s 229 is the purpose for which the document or communication in question was made. His Honour further noted that “consideration of the text of s 229 discloses that there is not a complete assimilation of s 229 privilege and client legal privilege. The assimilation is only with the advisory aspect of client legal privilege and then only to the extent that the advice constitutes “intellectual property advice” as defined. Not every service provided to a client by a registered trade marks attorney falls within the scope of s 229 privilege. In particular, advice constituting “intellectual property advice” as defined aside, the communications or documents generated in the course of the provision by a registered trade marks attorney of services in respect of arbitral proceedings before the World Intellectual Property Organisation Arbitration and Mediation Centre do not attract s 229 privilege. Nor, subject to that same caveat, would services provided to a client by a registered trade marks attorney in relation to proceedings in a court attract s 229 privilege”.
In this case DCC did provide representational and related services to Mr Cross in respect of arbitral proceedings before the World Intellectual Property Organisation Arbitration and Mediation Centre. Logan J commented that “it is not controversial that advice as to whether the rights associated with a registered trade mark confer rights in respect of an Internet domain name fall within the definition of “intellectual property advice” in s 229(3). And so, too, would advice as to whether the contents of a statutory declaration for use in an arbitral proceeding were sufficient to demonstrate that those rights did or did not extend to an Internet domain name seem to fall within the ambit of s 229 privilege – either by virtue of paragraph (b) or (e) of the s 229(3) definition. But the mere drafting of that statutory declaration by a registered trade mark attorney would not attract s 229 privilege. Likewise, advice as to what submission ought to be made to demonstrate that the asserted trade mark right did or did not extend to cover a domain name would seem to fall within the scope of the privilege, whereas the mere drafting of such a submission for use in an arbitral proceeding would not.”
His Honour also observed that “a duty of confidentiality, derived from the incorporation into a contract of retainer of s 19(2) of the Code of Conduct for Patent and Trade Marks Attorneys 2013, is not to be assimilated with the scope of s 229 privilege (though it might well explain why DCC felt obliged to raise an issue in relation to s 229 privilege, especially when fresh instructions could not be obtained from Mr Cross). Section 229 refers in the singular to a registered trade marks attorney. From this it was put on behalf of Titan Enterprises to follow that it would be necessary to identify each and every individual attorney who had furnished advice and the particular advice which that attorney provided in order to make out a s 229 privilege claim. While it is not necessary for the purposes of this application finally to decide that point, I am not inclined to accept it. In the absence of a contrary intention, and none is evident here, the singular includes the plural in a Commonwealth statute: s 23, Acts Interpretation Act 1901 (Cth). Section 229 would therefore seem to me to extend to a firm of registered trade marks attorneys practising in partnership. Within the confines of the privilege as conferred by s 229, I therefore find it difficult to see why the privilege ought not to extend to advice furnished by such a partnership in the same way as legal advice to a client furnished by a firm of solicitors practising in partnership would attract client legal privilege. It was further submitted that advice by a non-registered trade mark attorney would not attract s 229 privilege. Such circumstances considered in isolation, this may readily be accepted. But it does not follow from this that work undertaken by such a person within a firm and then adopted by a registered trade mark attorney as that firm’s advice would not attract s 229 privilege. More detailed consideration of these issues is not warranted by the circumstances of this case.”
In this case, an effort was made, without success, to seek and obtain instructions and related evidence from Mr Cross in relation to the privilege claim. The evidence tendered in support of the claim for s 229 privilege was in an affidavit made by a solicitor in the employ of the solicitors firm acting for DCC. The statements in this affidavit did not rise above mere assertion. There was no direct evidence either from Mr Cross or, apparently, the registered trade marks attorney who furnished the advice. Consequently, the onus of proving on the balance of probabilities that the asserted privilege extends to the redacted portions of the produced documents in question was not discharged. An order was made granting Titan leave to inspect and to copy the produced documents in unredacted form.